There are a number of ways that a patent applicant can end up with less than the patent applicant appeared to claim:

No. 10 Disclaiming claim scope during prosecution of the application.  However, this disclaimer must be clear and unmistakable.  Omega Engineering, Inc, v. Raytek Corp., 334 F.3d 1314, 1325-26 (Fed. Cir. 2003).

No. 9 Distinguishing the prior art.  See, SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187 [108 U.S.P.Q.2d 1001] (Fed. Cir. 2013)(excluding the use of beads from the claimed three dimensional culturing based upon statements distinguishing the prior art).

No. 8 Criticizing the prior art.  See, Chicago Board Options Exchange Inc. v. International Securities Exchange LLC, 677 F3d 1361 [102 USPQ2d 1683] (Fed. Cir. 2012)(limiting scope of claims based upon characterization of prior art as “antiquated,” and having “inherent inadequacies,” and “deficiencies.”); Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 [58 USPQ2d 1059] (Fed. Cir. 2001)(limiting claims to “coaxial lumen configuration” based, in part, criticisms of the dual lumen prior art in the Background Of the Invention.); Astrazeneca AB v. Mutual Pharmaceutical Co., 72 USPQ2d 1726 [72 USPQ2d 1726, 1730] (Fed. Cir. 2004)(limiting the meaning of solubilizer because of criticisms of prior art).

No. 7 Identifying “Objects” of the Invention.  See, The Gentry Gallery Inc. v. The Berkline Corp., 45 USPQ2d 1498 (Fed. 1998)(liming the location of controls so that the claimed invention meets the objects).

No. 6 Failing to describe more than one embodiment.  See, Wang Laboratories, Inc. v. America Online Inc., 197 F3d 1377 [53 USPQ 1161] (Fed. Cir. 1999)(determining that the claims were properly limited to the “only embodiment described.”); General American Transportation Corp. v. Cryo-Trans, Inc., 93 F.3d 766, 770, 772, [39 USPQ2d 1801, 1803, 1805-06] (Fed.Cir. 1996)(limiting the claims to the disclosure which was “not just the preferred embodiment of the invention; it is the only one described”); Watts v. XL Systems Inc., 232 F3d 877, 56 USPQ2d 1836 (Fed. Cir. 2000)(limiting sealingly connected because the specification “ only describes one method in which ‘tapered external threads [are] dimensioned’ to achieve the sealing connection.”); Modine Mfg. Co. v. United States Int’l Trade Comm’n, 75 F.3d 1545, 1551 [37 USPQ2d 1609, 1612] (Fed. Cir. 1996)(claimed limited to disclosed embodiment because “when the preferred embodiment is described in the specification as the invention itself, the claims are not necessarily entitled to a scope broader than that embodiment.”).

No. 5 Using i.e. instead of e.g.  See Edwards Lifesciences LLC v. Cook Inc., 582 F3d 1322 [92 USPQ2d 1599] (Fed. Cir. 2009)(limiting the construction of the term malleable, because “the specification’s use of “i.e.” signals an intent to define the word to which it refers.”); see, also, Abbott Laboratories v. Novopharm Ltd., 323 F3d 1324 [66 USPQ2d 1200] (Fed. Cir. 2003).

No. 4 Incorporating definitions or limitations “by reference.”  X2Y Attenuators, LLC v. Int’l Trade Comm’n, 757 F.3d 1358 [111 USPQ2d 1607, 1610 (Fed. Cir. 2014)(claims limited by statements incorporated by reference).

No. 3 Failing to Identify described matter as “preferred.”  See Honeywell International Inc. v. ITT Industries Inc., 452 F3d 1312 [79 USPQ2d 1294, 1299] (Fed. Cir. 2006)( limiting “fuel injection system component” to a fuel filter because a fuel filter was not merely discussed as a preferred embodiment); see, also, Cultor Corp. v. A.E. Staley Mfg. Co., 224 F.3d 1328 [56 USPQ2d 1208](Fed. Cir. 2000)(Claims limited to use of citric acid where “preferably” language separated by a comma, and thus did not apply.).

No. 2 Use of unnecessarily narrow language.  For example “very important” (Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350 [78 USPQ2d 1786, 1788] (Fed. Cir. 2006)(limiting claims because of “very important” feature described in specification.)); “important feature,” (SafeTCare Manufacturing Inc. v. Tele-Made Inc., 497 F3d 1262 [83 USPQ2d 1618] (Fed. Cir. 2007)(limiting claims because of an “important feature of the present invention” described in specification).);  “critical,” (harmacia & Upjohn Co. v. Mylan Pharm., Inc., 182 F.3d 1373 [50 USPQ2d 1033, 1037] (Fed. Cir. 1999)(limiting the claims because the specification indicated that “the use of spray-dried lactose is a critical feature of the present invention.”).) “necessary,” (Atofina v. Great Lakes Chemical Corp., 441 F.3d 991 [78 USPQ2d 1417, 1421](Fed. Cir. 2006)(Statement in specification that “it is necessary to have a catalyst to have a catalyst containing solely chromium” limited claims).); “solely,” (Atofina v. Great Lakes Chemical Corp 441 F.3d 991 [78 USPQ2d 1417, 1421]( (Fed. Cir. 2006) (Statement in specification that “it is necessary to have a catalyst to have a catalyst containing solely chromium” limited claims).); “essential,” (X2Y Attenuators v. ITC, [110 USPQ2d 1707, 1610] (Fed. Cir. July 7, 2014)(limiting claims to sandwich configuration because of description in specification that the sandwich configuration is “an essential element among all embodiments”).)  “requires,” (Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1367 [81 USPQ2d 1545, 1549] (Fed. Cir. 2007)(limiting the claims because of a statement in the specification that successful manufacture “requires” a particular step).);  and “universal” (X2Y Attenuators v. ITC, [110 USPQ2d 1707, 1610] (Fed. Cir. July 7, 2014)(limiting claims to sandwich configuration because of description in specification that the sandwich configuration is a “feature [] universal to all the embodiments”).)

No. 1 Describing “the invention” rather than embodiments of the invention.  See, Honeywell International Inc. v. ITT Industries Inc., 452 F3d 1312 [79 USPQ2d 1294, 1299] (Fed. Cir. 2006)(limiting “fuel injection system component” to a fuel filter because at least four times the specification described it as “this invention” or “the present invention”); Pacing Techs., LLC v. Garmin Int’l, Inc., 778 F.3d 1021 [113 USPQ2d 1859, 1862] (Fed. Cir. 2015)(noting that “the present invention includes …” or “the present invention is …” or “all embodiments of the present invention are ….” limits the claims); Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1447 [58 USPQ2d 1059] (Fed. Cir. 2001)( limiting claims to “coaxial lumen configuration” based, in part, on description of “the invention” and “the present invention.”); Watts v. XL Sys., Inc., 232 F.3d 877 [56 USPQ2d 1836, 1840] (Fed. Cir. 2000)(limiting claims to use of misaligned taper angles based on description of “the present invention”); Astrazeneca AB v. Mutual Pharmaceutical Co., 384 F.3d 1333 [72 USPQ2d 1726, 1730] (Fed. Cir. 2004)(limiting claims to solubilizers suitable according to the invention).